Ex Parte Shah et al

Patent Trial and Appeal Board

Jan 29, 2016

12322842 (P.T.A.B. Jan. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/322,842 0210612009
123665 7590 02/02/2016
Bell & Manning, LLC
and Northwestern University
2801 W. Beltline Hwy., Ste. 210
Madison, WI 53713
FIRST NAMED INVENTOR
Surendra P. Shah
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
00100-0018 5858
EXAMINER
MAR CANTONI, PAUL D
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
02/02/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@bellmanning.com
mmanning@bellmanning.com
pporembski@bellmanning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SURENDRA P. SHAH, MARIA S. KONSTA-GDOUTOS,
and ZOI S. METAXA
Appeal2014-004470
Application 12/322,8421
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from the Examiner's
decision finally rejecting claims 1, 3-10, 12, 16, 37, 38, and 41--48 under 35
1 According to Appellants, the real party in interest is Northwestern University.
App. Br. 2.
Appeal2014-004470
Application 12/322,842
U.S.C. § 102(b) as anticipated by Veedu or, in the alternative, under 35 U.S.C.
§ 103(a)2 as obvious over Veedu3 alone or in view of Berke.4
We have jurisdiction under 35 U.S.C. § 6(b). 5
We REVERSE.
The subject matter on appeal is directed to methods of making a
nanocomposite cementitious material (see, e.g., claims 1 and 9). Appellants
disclose that cementitious materials typically have low tensile strength and low
strain capacity. Spec. p. 1, 11. 17-18. Fibers may be incorporated into
cementitious material to compensate. Spec. p. 1, 11. 18-19. Appellants disclose
microfiber reinforcement has led to the significant improvement of the mechanical
properties of cementitious materials, including delays in the development of
microcracks, but microfibers do not stop the initiation of microcracks. Spec. p. 1,
1. 21 to p. 2, 1. 3. Appellants disclose that the incorporation of nanoscale fibers
allows the control of matrix cracks at the nanoscale in cementitious materials.
Spec. p. 2, 11. 4---6.
Appellants disclose problems associated with the incorporation of carbon
nanotubes in cementitious materials due to the poor dispersion of carbon nanotubes
and the cost of carbon nanotubes. Spec. p. 3, 11. 1-9. Appellants disclose
cementitious materials that address these problems by providing improved
2 In the Final Office Action dated Feb. 25, 2013, claims 1, 9, and 41--48 were
rejected under 35 U.S.C. § 112, first paragraph, and 35 U.S.C. § 132 because the
specification did not support the claims, and claim 1 was rejected under 35 U.S.C.
§ 112, second paragraph, as indefinite. These rejections were withdrawn by the
Examiner. Ans. 4.
3 Veedu, US 7,666,327 Bl, issued Feb. 23, 2010.
4 Berke et al., US 6,358,310 Bl, issued Mar. 19, 2002.
5 Our decision refers to Appellants' Appeal Brief filed September 13, 2013
(Appeal Br.), the Examiner's Answer mailed October 23, 2013 (Ans.), and
Appellants' Reply Brief filed November 25, 2013 (Reply. Br).
2
Appeal2014-004470
Application 12/322,842
dispersions of small amounts of carbon nanotubes in cement based materials.
Spec. p. 4, 11. 2--4.
Claim 1 is illustrative of the claims on appeal and is reproduced below from
the Claims Appendix of the Appeal Brief. 6 The limitations at issue are italicized.
1. A method of making a nanocomposite cementitious material,
comprising sonicating an aqueous solution containing surfactant and
carbon nanotubes to form a dispersion of carbon nanotubes in the
solution, and mixing the dispersion of carbon nanotubes and a cement
to form a nanocomposite cementitious material wherein the carbon
nanotubes are present in an amount of about 0.048% to about 0.08% by
weight of the cement and further wherein the nanocomposite
cementitious material exhibits a modified nanostructure so that the
average values of stiffness and hardness of C-S-H, as determined by
nanoindentation tests, are higher compared to the same cementitious
material without carbon nanotubes.
B. DISCUSSION
The dispositive issue on appeal is: Has the Examiner demonstrated that
Veedu anticipates a method of making a nanocomposite cementitious material in
which an aqueous solution containing surfactant and carbon nanotubes is
sonicated, as recited in claims 1 and 9, or shown that Veedu, either alone or in
combination with Berke, renders such a method obvious.
The Examiner finds Veedu discloses a method of making a cement
composite comprising carbon nanotubes. Ans. 2. The Examiner finds Veedu
discloses sonication of a dispersion including carbon nanotubes in an amount of
0.00001 to 90% by weight. Ans. 2.
6 Appeal Br. 32.
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Appeal2014-004470
Application 12/322,842
Appellants contend Veedu does not disclose sonicating an aqueous solution
containing surfactant and carbon nanotubes because Veedu discloses sonicating an
organic solvent including carbon nanotubes. Appeal Br. 10-11.
Appellants' arguments are persuasive of reversible error. "[T]he examiner
bears the initial burden, on review of the prior art or on any other ground, of
presenting aprimafacie case ofunpatentability. If that burden is met, the burden
of coming forward with evidence or argument shifts to the applicant." In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Only if that burden is met, does the
burden of coming forward with evidence or argument shift to the applicant. Id.
Here, the Examiner has not met the initial burden of presenting a prima facie
case ofunpatentability. The Examiner finds Veedu discloses a preference for an
organic solvent, such as acetone or an alcohol and "never states that water may not
be used as a solvent." Ans. 6.
"To anticipate a claim, a prior art reference must disclose every limitation of
the claimed invention, either explicitly or inherently." In re Schreiber, 128 F .3d
1473, 1477 (Fed. Cir. 1997). Significantly, Veedu's silence is not an express
description, within the meaning of 35 U.S.C. § 102(b), of"sonicating an aqueous
solution containing surfactant and carbon nanotubes" as recited in claims 1 and 9.
Appeal Br. 32-33. Moreover, the Examiner has not provided a sufficient factual
basis to support a finding of inherency.
As for obviousness, the Examiner likewise has failed to provide a sufficient
factual basis to support a conclusion of obviousness. See Ans. 2--4. Veedu
discloses that a good dispersion of the carbon nanotubes is critically important for
achieving desired properties for nanotube reinforced materials. Veedu col. 1, 11.
64---67. However, Veedu recognizes the difficulty of dispersing carbon nanotubes
in aqueous environments, where carbon nanotubes tend to aggregate. Veedu col.
4
Appeal2014-004470
Application 12/322,842
1, 11. 60-64. Thus, in the absence of any guidance provided by Appellants'
disclosure, there would have been no reason to sonicate an aqueous solution
containing surfactant and carbon nanotubes as recited in the claims on appeal. See
Appeal Br. 22-23.
The Examiner relies on Berke as disclosing the use of superplasticizer,
particularly polycarboxylate, in cement compositions. Ans. 3. The Examiner
concludes it would have been obvious to use polycarboxylate in the composite of
Veedu. Ans. 3. Therefore, the Examiner's reliance on Berke does not cure the
deficiencies of Veedu discussed above.
For these reasons, the rejection of claims 1, 3-10, 12, 16, 37, 38, and 41--48
under 35 U.S.C. § 102(b) as anticipated by Veedu or, in the alternative, under 35
U.S.C. § 103(a) as obvious over Veedu alone or in view of Berke is not sustained.
C. DECISION
The decision of the Examiner is reversed.
REVERSED
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